IPOPHL’s Statement in Response to Manila Times Column
Published on October 1, 2019
On September 3, 2019, the Manila Times published a column by Mr. Ben Kritz titled "Why is the PH IPO killing patents?" The author mentions an invention for a process called "social media five electronic governance and agile advisory for five-pattern goals achievement process." He then claims irregularities at the Intellectual Property Office of the Philippines (IPOPHL) based on how the said invention failed to secure local protection when its inventor is said to have been granted a patent in the US for this same application.
As it is the IPOPHL’s duty to the public to educate on matters regarding patent applications and applicable laws, we write to set the record straight and rectify inaccurate information that have reached Mr. Kritz and which he shared with the readers of the Manila Times.
In this pursuit, we would like to highlight these facts:
There is no automatic PH approval of any patent application granted in foreign countries First, patent laws are territorial in nature and differ across jurisdictions. While the international criteria of patentability—namely novelty (new), inventive step (not obvious), and industrial applicability—are similar, the standards are determined by individual countries and these are set out by their respective domestic laws. The differing standards governing territories is also the result of the differing market conditions in countries. What may work in one country, may not be viable for the other.
In the Philippines, we apply Republic Act No. 8293 or the Intellectual Property Code of the Philippines, its implementing rules and regulations, and patent examination guidelines when examining applications for patent grant. The independent Philippine patent system was established with the enactment of Republic Act No. 165 which created the Philippine Patent Office on June 20, 1947. We zealously guard IPOPHL’s right and independence to grant patents in our jurisdiction. Therefore, the alleged invention mentioned by the author must pass the scrutiny and comply with the formal and substantive requirements of Philippine patent laws, regardless of its status before the US Patent and Trademark Office and other offices, if any.
Further, the IPOPHL is transparent in its examination process. It informs the applicant of all findings and the basis of such findings through Formality Examination Reports (FER) or Substantive Examination Reports.
The FER for the invention at issue here pointed out the deficiencies and the examiner's findings were clearly explained. It is important to note that the examiner against whom the complaint is made actually presented constructive suggestions on how to address the deficiencies of the application.
The applicant is given full opportunity to intelligently respond and refute the findings in the reports. The applicant may even request an extension of time to file a reply. But if an applicant does not respond to reports within the allowable period, an application is considered withdrawn.
To note, the period for official communication with the applicant spanned for more than 12 months, giving the concerned applicant ample opportunity to convince the IPOPHL that the invention is worthy of being granted a patent and to rectify the deficiencies.
Non-submission of claimed US patent grant
Second, Mr. Kritz writes that "[t]he United States Patent Office was suitably impressed by this to grant the invention a patent in May 2016, including the necessary certification and priority designation under international treaties to facilitate the application for a patent in another country."
Based on our documents, only a provisional patent application was filed with the USPTO and no record of a patent grant was submitted to IPOPHL. A provisional application, permitted in some jurisdictions like the US, generally allows inventors to claim rights to priority while buying more time to complete the documents required in filing to seek for an actual grant.
As for the lP Code, Section 31 enumerates the documentary requirements applicants need to satisfy before their claim to the right of priority can be granted. The applicant concerned in Mr. Kritz's article was informed to comply with these requirements but failed to do so. Moreover, the corresponding fee to claim the right of priority was not paid by the applicant. Hence, the examiner was constrained to withdraw the application.
IPOPHL action, based on provisions of the Intellectual Property Code of the Philippines, implementing rules and examination manual
Third, we’d like to dispute the claim that the denial was not based on substantive grounds but “on grounds so patently wrong that one would have to conclude they exceeded mere incompetence and were deliberate attempt to deny inventor rights to her own intellectual property."
Since a patent denies the invention from the public domain and vests a bundle of exclusive rights to a holder for 20 years from the date of filing, the IPOPHL carefully examines each application to guard public interest. The IPOPHL carefully strikes a balance between administering the patent system to incentivize inventors and ensuring that public interest is safeguarded by not issuing trivial or frivolous patents. This is exactly why patent grant is never a “rubber-stamp affair."
Further, all IPOPHL patent examiners are highly capable and capacitated to examine submitted applications. Prior to fully engaging in the examination of actual patent applications for them to be decided on, patent examiners receive two (2) years of highly technical and structured competency-based training program here and abroad. Capacity-building in relation to the different fields of technology is continually provided by the IPOPHL in order for the examiners to keep abreast with fast-evolving technology fields.
No missing documents; non-compliance with disclosure due to absence of properly worded claim
Fourth, Sec. 32 of the lP Code requires that patent applications, among others, must contain at least one claim, description of the invention, and abstract. The description of the invention, particularly, is at the core of the patent system.
The Supreme Court in the case Boothe vs. Director of Patents (decided in January 1980) stressed the importance of the completeness of an application, ruling that "it is imperative that the application be complete in order that it may be accepted.”
It added: “lt is essential to the validity of Letters Patent that the specifications be full, definite, and specific. The purpose of requiring a definite and accurate description of the process is to apprise the public of what the patentee claims as his invention, to inform the Courts as to what they are called upon to construe, and to convey to competing manufacturers and dealers information of exactly what they are bound to avoid."
In the case raised by Mr. Kritz, the application, including all attachments “of the 50-plus pages filed” did not comply with the disclosure standards of Sec. 32 of the Intellectual Property Code since there was no single properly worded claim. To sum up, the IPOPHL’s ruling on incompleteness is pursuant to law and the decision of the Supreme Court. IPOPHL’s decision also covers the content of disclosure not on the required documents per se.
IPOPHL has no involvement in the withdrawal of the applicant’s lawyer from handling the case
Fifth, the withdrawal of the patent agent is a matter between the applicant and the patent agent. IPOPHL is not privy to that contractual relationship between the parties.
The Philippines adheres to universally accepted principles of intellectual property property and patent system.
The IPOPHL reaffirms the public of its continued commitment to assist inventors, especially local inventors, through programs such as those that offer 50% discounts for under-resourced inventors; waiver of filing fees for eligible trademark applicants; waiver of international search fees for patent applicants eyeing to enter international markets through the Patent Cooperation Treaty route; capacity building on patent search and drafting to our network of around 94 universities and research development institutions, among others. We will continue to support our inventors. Moreover, we will continue to issue grants for patents pursuant to the provisions of the IP Code, which our earlier lawmakers had viewed as sufficient in protecting public interest.
We truly hope this clarifies matters in the minds of the public. Rest assured that the IPOPHL is always committed to driving innovation and granting quality patents which will improve the economy of the Philippines and benefit the public.